About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lloyds Bank Plc v. Mochammad Tofan Nurfathoni

Case No. D2015-1455

1. The Parties

The Complainant is Lloyds Bank Plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Crowell & Moring, LLP, Belgium.

The Respondent is Mochammad Tofan Nurfathoni of Kediri, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <lloydstsbfoundations.info> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2015. On August 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2015.

The Center appointed Richard Hill as the sole panelist in this matter on September 24, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant owns the registered trademarks LLYODS and LLOYDS TSB and related marks, with rights dating back to 1986. These marks are used to promote the Complainant’s banking and related services. The marks are well-known.

The Respondent does not have any license or other authorization to use the Complainant’s mark or to sell its products or services.

The Respondent is using the disputed domain names to resolve to a website which provides advertising links to competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is in the business of financial services and that it owns numerous registered trademarks around the world that include its name LLOYDS, including LLOYDS BANK and LLOYDS TSB, with rights dating back to 1986. The marks are very well known.

According to the Complainant, the disputed domain name is confusingly similar to its mark LLYODS TSB because it incorporates the mark and merely adds the generic word “foundations”. The Complainant cites UDRP precedents to support its position.

The Complainant alleges that the Respondent does not have rights or a legitimate interest in the disputed domain name. He is not commonly known by the disputed domain name, has no trademark or service rights in the disputed domain name, and has not been licensed or otherwise authorized by the Complainant to use its well known mark. The Complainant cites UDRP precedents to support its position.

Further, the Complainant alleges that the disputed domain name is used to host a website with pay-per-click links, some of which offer financial services of competitors of the Complainant. Such use does not constitute a legitimate or fair use according to the Policy. The Complainant cites UDRP precedents to support its position.

The Complainant states that, by registering the disputed domain name, the Respondent prevents the Complainant, as the holder of a trademark, from reflecting its mark in a corresponding domain name. The effect of the registration is to affect the business of the Complainant by attracting visitors looking for information about the Complainant or its marks and creating difficulties for persons searching the Internet. It also tarnishes the Complainant’s trademark and is a significant indicator of bad faith. The Complainant cites UDRP precedents to support its position.

Further, says the Complainant, the disputed domain name resolves to a page containing sponsored links to services that compete with those of the Complainant. This constitutes bad faith registration and use under the Policy. The Complainant cites UDRP precedents to support its position.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is clear that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s mark, because it contain the mark and merely add the common word “foundations” to form the domain name. See PACCAR, Inc. v. Enyart Associates and Truckalley.com, LLC, WIPO Case No. D2000-0289; see also Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.

The Panel holds that the Complainant has satisfied its burden of proof for this first element of the Policy.

B. Rights or Legitimate Interests

The Respondent does not have any license or other authorization to use the Complainant’s mark or to sell its products or services. The Respondent is using the disputed domain name to resolve to a web page that offers sponsored advertising links to services that compete with those of the Complainant. Thus the Respondent’s use of the Complainant’s marks in the disputed domain names appears to be an attempt to impermissibly trade off the Complainant’s reputation and goodwill by creating a likelihood of user confusion.

Therefore, the Panel finds that the Respondent is not making a bona fide offering of goods or services for purposes of the Policy. Where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937).

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Respondent (who did not reply to the Complainant’s contentions) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when registering the disputed domain name.

As noted above, the Respondent is using the disputed domain name to resolve to a web page containing links to competitors of the Complainant. The Respondent likely obtains click-through advertising revenue from those links. Thus the Panel finds that the Respondent has registered and is using the disputed domain names to take advantage of the confusing similarity between the disputed domain names and the Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.

The Panel holds that the Complainant has satisfied its burden of proof for this element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <lloydstsbfoundations.info> be transferred to the Complainant.

Richard Hill
Sole Panelist
Date: September 25, 2015